Understanding Direct and Indirect Infringement in Patent Law

Direct infringement occurs when a person (e.g., company) makes a patented product.  Indirect infringement occurs when the person or entity helps someone else make the patent product.  By the end of this article, you’ll understand what they mean and if your liable for patent infringement.  I’ll also discuss how understanding these concepts helps you draft claims.

What is Direct Infringement?

Direct infringement occurs when someone makes, uses, sells, offers to sell, or imports a patented invention without the patent owner’s permission. The infringer is practicing the claim, meaning all elements of the patented invention are being used or made by the infringer.  No third party is involved.

Examples:

• A company manufactures and sells a patented product without authorization from the patentee.
• A manufacturer uses a patented process in their production line.

Key Features of Direct Infringement:

1. Strict Liability: Direct infringement is a strict liability offense. This means that the infringer doesn’t need to know that the patent even exists or that they are making a product that was patented by someone else.  However, if the patent owner didn’t properly mark their product with a patent number, then there is no liability until the infringer is made aware of their infringing activity.  The patent owner has to send them a cease and desist letter.  The letter gives the infringer actual notice of the patent.  Patent marking provides constructive notice of the patent and imposes on them a duty to research and find out if their activity is infringing.
2. Preferred Type of Infringement: Direct infringement is the preferred type of claim to assert against infringers.  They are generally easier to enforce because they don’t require proving the infringer’s knowledge or intent. In contrast, indirect infringement requires evidence of knowledge or actions to encourage another to infringe, as discussed below.

What is Indirect Infringement?

Indirect infringement occurs when someone helps a third party to infringe the patent.  That someone is said to contribute to or induce another to directly infringe a patent. The third party can be an end user or customer.  There are two primary forms of indirect infringement: active inducement and contributory infringement. We will discuss them in detail below.  Unlike direct infringement, indirect infringement requires knowledge of the patent and infringing activity, making it more challenging to prove.  This is why direct infringement is always the preferred type of claim to assert against your competitors compared to indirect infringement.

1. Active Inducement of Infringement

Active inducement, defined under 35 U.S.C. § 271(b), occurs when someone actively encourages or aids another party to infringe a patent.

Example: A company provides detailed instructions to customers on how to use a product in a way that infringes a patent.

Key Elements:

• Knowledge and Intent: The inducer must know about the patent and that their actions would lead to infringement.  Even if they didn’t actually know, they can still be held to have such knowledge if they were willfully blind to the patent.  Put simply, you can’t play dumb to a certain extent.
• Specific Intent Required: The inducer must intentionally encourage the infringement.

2. Contributory Infringement

Contributory infringement, defined under 35 U.S.C. § 271(c), occurs when someone supplies a component that is specifically designed to be used in an infringing product or process and has no substantial non-infringing use.

Example: A company sells a specialized part that can only be used to perform a patented method.

Key Elements:

• Knowledge Required but Not Specific Intent: Unlike inducement, contributory infringement does not require intent. Instead, liability is established by showing that the component is specifically designed for use in a system or method that infringes the patent.  Once again, willful blindness can be used to establish knowledge.

Claim Drafting Strategy

When drafting patent claims, you have to have both direct and indirect infringement in mind. In claim drafting, your goal is to target a party whose actions you want to stop.  You have to have that target entity in mind to ensure that your claims encompass their activities. In theory, a claim can be crafted to target anyone along the entire supply chain up and down from the manufacturer to the end user.  Below is a strategy for crafting a claim based on direct and indirect infringement.

1. Direct Infringement is the Primary Goal: Ideally, the claims you draft are directed to a target entity wherein the target entity would directly infringe the claims should they choose to copy your product. For example:
   • If you want to enforce your patent against a manufacturer, craft claims that cover the process of manufacturing the inventive product.
   • If you want to enforce your patent against end users, focus on claims covering method of using the product.
   • Product or apparatus claims also cover the manufacturer and end user because they will all eventually either make or use the patented product.  Apparatus claims are broad but are more difficult to secure compared to method claims.
2. Backup Claims for Indirect Infringement: Sometimes, your target may not directly practice the invention. For example, a manufacturer might not make all parts of the invention. They might make just one part of the invention, the most profitable part.  In such cases, include backup claims to establish liability for:
   • Active Inducement: Think whether their is a way to get the target to actively induce others to infringe based on them making only one component of the invention.  If yes, write the claim no matter how far fetch it is.
   • Contributory Infringement: The target might be making the most expensive, thus most profitable component of the invention.  Write a claim solely for the component if it is a component that can only be used in the invention.

If warranted, file as many claims as needed but be aware of the extra claims fee.  The basic PTO fee when filing a nonprovisional application allows for 3 independent claims and 20 claims total.  But, more can be submitted with the payment of a fee.

By drafting claims that attack the target from multiple angles, you maximize the enforceability of your patent and protect against design-arounds.

Defending Against Infringement Claims

If you’re on the receiving end of a patent infringement lawsuit, understanding the theories of infringement is crucial:

• Direct Infringement: Determine if your actions involve practicing all elements of the patented invention.
• Indirect Infringement: Assess whether your activities, such as supplying parts or providing instructions, contribute to or induce others to infringe.

Understanding whether the patent holder’s claims accuse you of direct or indirect infringement can help you identify weaknesses in their case and build an effective defense strategy.

Practical Takeaways

1. Direct Infringement as a Claim Drafting Priority: Aim to craft claims that the target will directly infringe. Direct infringement claims simplify enforcement and avoid the need to prove knowledge or intent.
2. Backup Claims for Indirect Infringement: Even if drafting claims for direct infringement isn’t optimal, still draft and include them in your patent application but also include claims for indirect infringement. These claims can establish liability for manufacturers or distributors who contribute to or induce infringing activity.
3. Understand the Accusation in Infringement Cases: If facing a lawsuit, identify whether the patent owner is accusing you of direct or indirect infringement. This understanding can clarify the patent holder’s strategy and give you a way to avoid liability for patent infringement.

Contact us today at (949) 433-0900 to schedule a consultation. Let us help you navigate the intricacies of patent law, safeguard your innovations, and develop a strategy tailored to your needs.